88
8
SER
V
AND
www. NYLJ.com
H
NC
THE BE
ING
1
BA
R SINCE
Wednesday, march 2, 1995
Patent and Trademark Law
Patent Update:
the Death Knell of Juries in Patent Cases
I
N A DECISION which will surely create
a firestorm, on April 5, 1995, the Court
of Appeals for the Federal Circuit, in
banc, severely curtailed the role ofthejuryin determining patent infringement.
As stated by Judge H. Robert Mayer in an
emotional concurring opinion:
Today the court jettisons more than
200 years of jurisprudence and eviscerates the role ofthejury preserved by the
Seventh Amendment ofthe Constitution
ofthe United States; it marks a sea change
inthe course ofpatent law that is nothing
short of bizarre. Sadly, this decision represents a secession from the mainstream
ofthe law. It portends turbulence and cynicism inpatent litigation. For this is not just
about claim language, it is about ejecting
juries from infringement cases.
Traditionally, thejury has always had a
role in determining patent infringement,
the analysis of which involves two questions: how should the claimed invention
be construed (i.e., what is the scope and
meaning ofthe claims); and do the claims
as properly construed cover the accused
device or process?
The first question has always been and
remains a legal one, and the second question remains a question for thejury. Based
on a long line of Federal Circuit authority, it
has been left to thejury to resolve disputed
factual matters (such as the meaning of a
particular word used inthe claims) upon
consideration ofthepatent, its file history
and extrinsic evidence such as an expert's
or the inventor's testimony.
Unless the Supreme Court intervenes,
this will no longer be the case. The Federal Circuit ruled in banc that an expert's
and inventor's testimony regarding claim
construction, as well as other extrinsic
evidence relevant to the issue, are not to
be put to thejury for factual determination. Rather, the district court itself is to
consider and weigh such evidence en route
to pronouncing the meaning and scope
ofthe claimed invention based on thepatent documents themselves.
After the court on its own defines what
the claims mean, thejury is to determine
whether the claims as construed by the
court cover the accused product or process. Because the latter question almost
always hinges on the claim's construction
(rarely do the parties dispute the structure or steps ofthe accused product or
process), the infringement determination
is now effectively left solely inthe hands
of the court.
The Decision
In Markman and Positek, Inc. v. Westview Instruments, Inc. and Althon Enterprises, Inc., 1 Markman filed suit against
Westview inthe District Court for the
Eastern District of Pennsylvania, claiming infringement of its patentof an inventory control and reporting system for
use in laundries and dry-cleaning stores.
Although thejury found infringement, the
district court granted Westview's motion
for a judgment as a matter of law (JMOL).
Markman appealed to the Federal Circuit
and, on Nov. 5, 1993, the Federal Circuit
ordered the parties to file supplemental
briefs on four specific issues:
(1) Are disputes over the meaning of
a term in a claim (a) issues of law to be
decided on a documentary record, similar
to questions of statutory construction; or
(b) are there some claim construction disputes that can only be resolved by resort
to extrinsic evidence which requires the
By
Robert C.
Scheinfeld
taking of factual and expert testimony?
(2) If factual or expert testimony is proffered to resolve a particular dispute, what
are the respective roles ofthe trial judge
and jury?
(3) When a claim construction dispute
is on appeal to this court, what is the standard of review this court should apply to
the judgment below on the merits? With
regard to permissible post-trial motions?
(4) When the meaning of a claim term
must be decided inthe course of deciding
the question of infringement, what are the
respective roles of trial judge and jury?
The infringement controversy centered
on the use ofthe word inventory inthe
claims, the elements of which included
a data input device, a data processor, a
printer and an optical scanner. The data
processor includes means to maintain an
inventory total such that the system can
detect and localize spurious additions to
inventory as well as spurious deletions
therefrom. In effect, by using the invention
ofthe '954 patent, the progress of articles
through the laundry and dry-cleaning system can be completely monitored.2
The accused device consisted of two
separate pieces of equipment. One ofthe
pieces is used to print bar-coded tickets
for the articles and to retain an invoice list.
The other piece read bar-coded tickets or
invoices at any location inthe dry-cleaning
establishment and identifies extra or missing invoices.3
At the heart ofthe infringement question, therefore, was whether the word
inventory as used inthe claims could be
construed to include invoices, or should
be limited to clothing. If the word inventory is limited to clothing, thepatent is not
infringed; if inventory includes invoices,
Wednesday, march 2, 1995
it is infringed.
At trial, the patentee Markman presented the testimony of a technical expert (to
describe how the defendant Westview's
device operates), the inventor (who testified about his patent and its claims),
a patent law expert and an accountant.
Westview presented the testimony of its
president, who demonstrated the operation ofthe accused device.4
Markman's position on appeal turned
on whether the district court acted properly by construing the term inventory as a
matter of law notwithstanding a contrary
construction given the term by some of
Markman's witnesses and by the jury.5
In arriving at its decision to affirm, the
Federal Circuit recognized that review
of a grant of JMOL requires a careful
distinction between fact and law since
the court may review legal standards
de novo but reverse the factual findings
only if not supported by substantial
evidence. It thus carefully reviewed its
precedent concerning the determination
of patent infringement.
Inconsistent Holdings
The Federal Circuit began its analysis
by acknowledging the court's prior inconsistent statements as to whether and to
what extent claim construction is a legal
or factual issue, or a mixed issue. There
are two lines of Federal Circuit opinions,
the court stated, one pronouncing the
view that claim construction may have
underlying factual inquiries that must be
submitted to a jury.
The first case to make this pronouncement, McGill, Inc. v. John Zink Co., 736
F2d 666, 221 USPQ 944 (Fed. Cir. 1984),
deviated from past precedent.6 Despite
the fact that McGill had no basis for the
view it set forth, a significant line of cases
developed stating that there may be jury
triable fact issues in claim construction.
During that time, however, a second line
of Federal Circuit opinions continued to
follow the earlier pronouncements that
claim construction is strictly an issue of
law.7 This, the Markman court decided, is
the right path. It is right, the court stated,
for a number of reasons, including:
(1) Supreme Court precedent has repeatedly held that the construction of a patent
claim is a matter of law exclusively for
the court.8
(2) It is a fundamental principle of
American law that the construction of
written evidence is exclusively with the
court.9 As stated by Learned Hand, appellate courts have untrammelled power to
interpret written documents.10 It therefore
follows, the Markman court said, that a
patent is uniquely suited for having its
meaning and scope determined entirely
by a court as a matter of law.11
(3) It should be the courts who define
the federal legal rights created by thepatent document.12
(4) Competitors should be able to rely
upon the claim language as indicative of
what they can and cannot do; they should
rest assured, if infringement litigation
occurs, that a judge, trained inthe law,
will analyze the text ofthepatent and its
associated public record and apply the
established rules of construction. 13
(5) Treating claim construction solely
as a matter of law affords the inventor
the opportunity to obtain a permanent
and universal definition of his rights to be
applied in all subsequent cases involving
his patent.14
In view ofthe foregoing, the Federal
Circuit held:
We therefore settle inconsistencies in
our precedent and hold that in a case
tried to a jury, the court has the power
and obligation to construe as a matter
of law the meaning of language used
inthepatent claim. As such, [a] patent
covers the invention or inventions which
the court, in construing its provisions,
decides that it describes and claims. 3
Robinson on Patents, supra,1019, at 247.
Because claim construction is a matter of
law, the construction given the claims is
reviewed de novo on appeal. Accordingly,
Markman's principal argument that the
district court erred in taking the issue of
claim construction away from thejury is
itself legally erroneous.
In view ofthe majority's conclusion, it
is now clear that claim construction and
the meaning ofthe claims is within the sole
province ofthe court. It is the court that is
to construe claim language in light ofthe
specification and prosecution history,
as well as extrinsic evidence including
expert and inventor testimony, dictionaries and learned treatises: When, after
considering the extrinsic evidence, the
court finally arrives at an understanding
ofthe language as used inthepatent and
prosecution history, the court must then
pronounce as a matter of law the meaning
of that language.15
As explained by the Markman majority, the district court is merely to use
cer tain extrinsic evidence it finds
helpful and reject other evidence as
unhelpful. It is to resolve disputes only
en route to pronouncing the meaning
of claim language based on the patent
documents (i.e., thepatent and prosecution history) themselves:
[T]he court is not crediting certain
evidence over other evidence or making
factual evidentiary findings. Rather, the
court is looking to the extrinsic evidence
to assist in its construction ofthe written
document, a task it is required to perform.
The district court's claim construction,
enlightened by such extrinsic evidence as
may be helpful, is still based upon thepatent and prosecution history. It is therefore
still construction, and is a matter of law
subject to de novo review.16
Applying these principles to the case
at hand, the Markman court concluded
that the district court properly rejected
Markman's extrinsic evidence and agreed
that the term inventory means articles
of clothing.
Concurrence
While concurring with the majority that
the district court properly granted judgment as a matter of law, Judge H. Robert
Mayer took strong exception to the majority's determination that claim interpretation is exclusively a matter of law.
Judge Mayer stated that the majority
decision violates the Seventh Amendment right to a jury trial, and reflects a
disarming trend to denigrate the role and
competence ofjuriesin complex matters.
According to Judge Mayer, [t]he quest
to free patent litigation from the unpredictability ofjury verdicts, and generalist
judges, results from insular dogmatism
inspired by unwarrantable elitism; it is
unconstitutional.17
A jury trial has always been available
inpatent cases, asserts Judge Mayer, and
thejury has always been entrusted with
ruling on the question of infringement.18
By usurping the role of the jury in connection with the underlying external factual
inquiries relative to the issue of claim construction, the majority effectively ends the
role ofthejury: All these pages and all these
words cannot camouflage what the court
Wednesday, march 2, 1995
well knows: to decide what the claims
mean is nearly always to decide the case
[and] today's action is to essentially banish juries from patent cases altogether.19
Judge Mayer views this displacement
with suspicion, labeling it an attempt to
create a complexity exception to the Seventh Amendment for patent cases.20 For
Judge Mayer, a district court judge is no
more qualified than a jury to resolve the
complex technical issues often presented
inpatent cases.
Dissent
Judge Pauline Newman filed a 69-page
dissent. She dissented because, in her
view, claim interpretation, i.e., the meaning and scope of disputed technologic and
other terms of art, is a classical factual
inquiry which is properly, historically and
constitutionally the domain ofthejury - not
the court.
Judge Newman argues that patent
infringement is a question of fact whose
resolution often depends on the factual
meaning and scope of terms of scientific
art and technology and how those terms
are used by the patentee in describing and
claiming his or her invention.21 Indeed,
she notes, the trier of fact often interprets
such terms by making findings that depend
on the weight, credibility and probative
value of conflicting evidence presented
by the parties.22
Under the majority's decision, claim
interpretation, as a question of law, is not
reviewable by the appellate court de novo
and thus will result inthe issue being ultimately decided de novo through appellate
briefs and 15 minutes per side of attorney
argument, rather than by the trier of fact's
firsthand review ofthe physical and testimonial evidence at trial.23
Judge Newman ponders whether a trial
judge will no longer need to address the
legal issues of admissibility and relevance
of technologic evidence. She wonders who
will determine the credibility and weighing of evidence which the U.S. Supreme
Court has held to be questions for thejury,
not the judge.24 She sees as the practical
effect ofthe majority's decision the Hobson's choice of either admitting extrinsic
evidence as part ofthe trial record for
de novo review by the Federal Circuit or
not admitting extrinsic evidence at trial,
since claim interpretation is only a question of law.25
She further wonders whether mini-trials
will have to be held by the trial court to
resolve disputed claim interpretation
issues prior to thejury trial.26 She also
argues that [t]he extensive exposition of
disputed facts that is available at trial can
not be duplicated on appeal.27
Judge Newman lastly notes:
Today this court severs patent cases
from all others, requiring different (and
uncertain) procedures at trial, taking unto
ourselves a different, and uncertain, appellate role.
The deference that appellate courts
must give to the trial process is fundamental to the efficiency, and the effectiveness, ofthe judicial system. It implements
the two-tier litigation right, and provides
stability to the trial process while preserving appellate authority for the law,
its policy and its purposes. The court's
decision today denies the critical values
ofthe trial, and moves the Federal Circuit
firmly out ofthe juridical mainstream.28
Conclusion
It remains to be seen what the true
effect of the Markman decision will be.
But this much is sure: if the Supreme
Court does not review the decision, the
role ofthejuryinpatent cases will be diminished if not eliminated. The profound
www.bakerbotts.com
effect of this will be a significant increase
inthe number ofpatent cases not ever
reaching trial but instead being decided
on summary judgment.
Moreover, if the fears expressed inthe
concurring and dissenting opinions come
true, the resolution ofthe issue of infringement, including the question of claim construction, whether or not that construction is based on disputed facts placed in
evidence at trial, will be decided not at
the trial court level but inevitably and
increasingly by the Federal Circuit after
de novo review.
••••••••••••••••
•••••••••••••
1. 772 F.Supp. 1535 (E.D. Pa. 1991).
2. Opinion, pp. 3-4, 6.
3. Opinion, pp. 7-8.
4. Opinion, p. 8.
5. Opinion, p. 12.
6. This precedent includes SSIH Equip. S.A. v. United States
Int'l Trade Comm'n, 718 F2d 365, 376, 218 USPQ 678, 688 (Fed.
Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F2d 760, 77071, 218 USPQ 781, 788 (Fed. Cir. 1983); and Fromson v. Advance Offset Plate, Inc., 720 F2d 1565, 1569-71, 219 USPQ 1137,
1140-42 (Fed. Cir. 1983).
7. Opinion, pp. 16-17.
8. Opinion, pp. 19-20.
9. Opinion, p. 21.
10. Id.
11. Id.
12. Opinion, p. 22.
13. Id.
14. Id.
15. Opinion, p. 29.
16. Opinion, p. 30 (citations omitted).
17. Concurrence, p. 2.
18. Id.
19. Concurrence, p. 1.
20. Concurrence, p. 12.
21. Dissent, pp. 1-2.
22. Dissent, p. 2.
23. Dissent, p. 4.
24. Dissent, p. 17 (citing Anderson v. Liberty Lobby, Inc., 477
US 242, 255 (1986)).
25. Dissent, p. 20.
26. Dissent, p. 24.
27. Dissent, p. 25.
28. Dissent, pp. 64-66.
Reprinted with permission from the March 2, 1995 edition of the NEW YORK LAW
JOURNAL © 2013 ALM Media Properties, LLC. All rights reserved. Further duplication
without permission is prohibited. For information, contact 877-257-3382 or reprints@alm.
com. # 070-10-13-33